Sean McGuire

Clayton Utz
Special Counsel Melbourne

Sean's extensive expertise in complex cases, coupled with his responsiveness, strategic thinking and empathy, makes him the obvious choice for clients. The clarity of his advice always gives us a very clear road map that is easy to understand and follow.

– WTR 1000, 2024

Overview

Sean McGuire specialises in intellectual property law, with a particular focus on trade marks and brand protection. His practice involves portfolio management, transactions, and enforcement in Australia and a wide variety of jurisdictions internationally.

Recognised for his expertise in trade mark prosecution and strategy with "a complete command of Australian IP law" (WTR 1000, 2024), major domestic and foreign clients entrust Sean as their IP advisor. He has represented some of the world’s leading brands in the automotive, biotech, web3 gaming, food & beverage, fashion, luxury goods and sporting apparel industries.

Sean is both an IP lawyer and a registered trade marks attorney. He has extensive experience in all aspects of trade marks and brand protection (including clearance searches, filing advices, opposition and non-use removal proceedings, certification trade marks, anti-counterfeiting, customs procedures, infringement actions and IP disputes). He also acts for public and private sector organisations on transactional matters, including licensing and technology commercialisation and the IP aspects of M&A transactions and corporate restructurings.

Notable Work
  • Manages Toyota Australia's trade mark portfolio and advises on intellectual property issues including trade mark clearance searching, filing strategies, oppositions and enforcement.
  • Manages the significant global trade mark portfolio for Monash University including the World Mosquito Program. He also advises on IP issues including misuse of the Monash name and reputation in Australia and overseas.
  • Manages Saputo Dairy's Australian and New Zealand trade mark portfolios. He advises on intellectual property issues including new brand launches, portfolio management, commercialisation, oppositions and disputes.
  • Manages the significant global portfolio for Myer. Brands within the portfolio include Myer, Sass & Bide, Marcs, David Lawrence and Trent Nathan.
  • Manages the significant global portfolio for 2XU, particularly in respect of clothing and compression garments for its 2XU and X trade marks. He also advises on infringement, enforcement, oppositions and disputes in Australia and overseas.
  • Manages Racing Victoria Limited (RVL) trade mark portfolio. He advises on IP issues including protecting RVL's valuable names used in the racing industry.
  • Advised numerous Victorian and Commonwealth Government departments and agencies on contentious and transactional trade mark and IP matters.
Insights
Reputation and consumer confusion in trade mark infringement proceedings: the High Court weighs in
16 Mar 2023 | Article
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The danger of losing control: authorised use of a trade mark and the exercise of "control" by a trade mark owner
17 Aug 2020 | Article
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Round 2: A fight about much more than peanuts: Kraft beaten by Bega in crunch trade mark appeal
30 Apr 2020 | Article
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A fight about much more than peanuts: licensing unregistered trade marks after Kraft v Bega
30 May 2019 | Article
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